Y. Georgiades & Associates LLC Advocates & Legal Consultants won an appeal in the EUIPO The European Intellectual Property Court against AEA ABOGADOS-LAWYERS SL
The case relates to a registration of the European trademark Metropole Alliance which was the name of an International Network of Lawyers and other professionals registered in Brussels .
The application for the registration was filed in bad faith and with an intention to extort money from its members, by the President of AEA ABOGADOS Pedro Beltran from Alicante Spain , who later on started sending threatening letters to members of Metropole Alliance asking them to pay him money.
In a landmark judgment the three member Appellant Court of EUIPO has accepted all legal arguments submitted by The advocates Yiannos Georgiades and Stephanie Georgiadou and dismissed the trademark registered in bad faith by AEA ABOGADOS. The court in its conclusion stated the following:
“…From the particular circumstances of the present case it can only be deduced that the EUTM proprietor (I.e AEA ABOGADOS-LAWYERS SA) filed the contested EUTM with the sole purpose of hindering the operation of the association ‘Metropole Alliance’ which cannot be qualified as corresponding to ethical behaviour and honest commercial practice. Rather, the EUTM proprietor’s actions constitute a strong indication of a speculative registration, the ultimate aim of which was merely to impede the operation of the competing association of lawyers and possibly obtain financial compensation.
58 It should also be noted that it is an act of bad faith to file an application with the intention of extorting money or of urging third parties, under threat of legal sanctions, to abandon their marks (07/07/2016, T82/14, Luceo, EU:T:2016:396, § 145; 08/05/2014, T327/12, Simca, EU:T:2014:289, § 72).
Conclusion regarding bad faith
59 The objective circumstances of the present case indicate bad faith on the part of the EUTM proprietor in filing the EUTM and the EUTM must therefore be invalidated in its entirety.
60 The contested decision is annulled, and the appeal is allowed.
Costs
61 As the EUTM proprietor is the losing party within the meaning of Article 109(1) EUTMR, it shall be ordered to bear the costs incurred by the invalidity applicant in the cancellation and appeal proceedings.
62 As to the appeal proceedings, these consist of the appeal fee of EUR 720.
63 As to the cancellation proceedings these consist of the invalidity fee of EUR 630. The total costs of the appeal and cancellation proceedings amount to EUR 1 350.
Order
On those grounds,
THE BOARD
hereby:
1. Annuls the contested decision and invalidates the EUTM in its entirety;
2. Orders the EUTM proprietor to pay EUR 1 350 for the invalidity applicant’s costs of the appeal and cancellation proceedings.”
